This month the U.S. Supreme Court struck a blow against manufacturers of parody product designs. In a rare bit of partisan unity, the court decided 9-0 against VIP Products LLC, the company behind the "Bad Spaniels" dog toy that resembles a Jack Daniel's whiskey bottle.
Interestingly, it was VIP Products that got legal first. Jack Daniel's Properties Inc. had reached out to them, demanding they stop selling their product. According to the case syllabus, "VIP filed suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel's trademarks. Jack Daniel's counterclaimed for infringement and dilution."
VIP's defense was that their "Bad Spaniels" design was protected by the First Amendment (freedom of speech) and passed the Rogers test. Which means that, dammit, now I have to explain what the Rogers test is:
The Rogers Test. So in 1986, director Federico Fellini made a movie called "Ginger and Fred," a comedy about two Italian dancers who worked as impersonators of Fred Astaire and Ginger Rogers. (If you don't know who Fellini, Fred Astaire and Ginger Rogers are, Google them—I'm not your slave.)
Ginger Rogers sued the film's producer for trademark infringement, which is protected under the Lanham Act, the U.S.' primary federal trademark law.
Rogers lost in court. The court ruled that the use of Rogers' name in the title was "artistically relevant," as one of the characters in the movie plays a Ginger Rogers impersonator. They also ruled that using Rogers' name in the title did not explicitly suggest that she, Ginger Rogers, was necessarily endorsing or affiliated with the movie.
This two-part decision became known as the Rogers test, which is now rolled out whenever there's a trademark infringement case. To pass the test, you have to prove 1) that your use of the trademark is artistically relevant and 2) that your use of the trademark does not explicitly state that the trademark holder is actually involved with your product.
Interestingly for designers, the reason VIP lost the case is because the Justices are looking at the very form of the bottle itself as the trademark. As Justice Elena Kagan writes in the decision:
"…Bad Spaniels' trade dress…is designed to evoke a distinctive beverage bottle-with-label. Even if you didn't already know, you'd probably not have much trouble identifying which one.
"Bad Spaniels is about the same size and shape as an ordinary bottle of Jack Daniel's. The faux bottle, like the original, has a black label with stylized white text and a white filigreed border. The words 'Bad Spaniels' replace 'Jack Daniel's' in a like font and arch…. Below the arch, 'The Old No. 2 On Your Tennessee Carpet' replaces 'Old No. 7 Tennessee Sour Mash Whiskey' in similar graphic form. The small print at the bottom substitutes '43% poo by vol.' and '100% smelly' for '40% alc. by vol. (80 proof ).'"
In short, the court upheld an earlier District Court decision (which VIP Products had appealed) that "VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy." In other words, the decision essentially says that if you emulate another company's precise shape and "trade dress," you're misleading consumers into believing that the copied company is the source of your parody good.
The decision should strike fear into the hearts of parody product designers.
Now if only there was an international body that could tackle design piracy.
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